Tuesday, February 19, 2013

Getting a patent by omitting an element from a prior art combination

In Ex parte PEREZ-CRUET , the Board discusses the law on patentability of a combination derived from omitting an element from a prior art combination:

On the evidence of record, we affirm, as the Examiner’s reasoning is consistent with precedent:

While the omission of an element in a combination may constitute invention
if the result of the new combination be the same as before, yet, if the omission of an element is attended by
a corresponding omission of the function performed by that element,
there is no invention if the elements retained perform the same function as before.
Richards v. Chase Elevator Co., 159 U.S. 477, 486 (1895).
See also, In re Karlson, 311 F.2d 581, 584 (CCPA 1963)
(“It is well settled, however, that omission of an element and its function
in a combination is an obvious expedient if the remaining elements perform
the same functions as before.”); In re Luce, 304 F.2d 899, 901 (CCPA 1962)
(similar, citing Richards); In re Miller, 197 F.2d 340, 341 (CCPA 1952) (similar, citing Richards).

Separately, as to analogous art:

“‘A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In other words, ‘familiar items may have obvious uses beyond their primary purposes.’ KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, [402], 127 S.Ct. 1727, 1742 (2007).” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (finding a reference describing a folding bed analogous to appellant’s folding treadmill).

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I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
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